Pattishall IP Blog

July 31, 2017

It’s Really Hard to Trademark Product Designs. But, You Can Do It.

Filed under: Design Patent, Trademark (General) — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:43 am

By Janet A. Marvel

The Trademark Office just refused to register another product design.  They do this often.  This time, it was the shape of a wind turbine:

The Office found that the design was “functional” because it was “essential to the use or purpose of the article” or “affect[ed] the cost or quality of the article.”  You can’t register or protect a product design if it is functional, and many, many designs get shot down for just that reason.

So what?  Well, often the way trademark protection for designs comes up in business is this: Company A develops a new product that surpasses its competition.  The company patents the product.  When the patent expires, Company A personnel are very unhappy that anyone who wants to copy the product can do just that.  Companies want to continue to protect their market, so they look for long term intellectual property protection.  That comes in the form of a trademark.

But it’s too late.  Company A did not think early enough about how to protect its design after its patent expired.  Its design is almost assuredly functional, in large part because courts don’t want companies to do an end-run around patent expiration.  But, there are ways of retaining market goodwill, explained below, after a patent expires.

The way that courts evaluate functionality is to look at the following factors:

  1. Whether there is a utility patent for the product.
  2. Whether the company advertised the utilitarian benefits of the product.
  3. Whether there are alternative designs to use for competitive products.

If Company A develops a new product, it would be unreasonable not to get a utility patent.  So the functionality door is probably closed right there.  Moreover, the company will want to advertise the utilitarian benefits of its product, thereby closing the window.

The third factor, availability of alternative designs, can present a difficult analysis.  In an early case, the Trademark Office protected the following as a mark, because competitors could make their products another way (i.e. use an alternative design).

Apparently, that did not sit well with the courts, who concluded that the design was not very distinctive.  In Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), the Supreme Court dealt with the idea of alternative designs, finding that alternative designs need not be considered at all if the alleged trademarked feature can be established as essential to the use or purpose of the product.

Put another way, if there is a patent, courts often give only lip service to the other factors.  The courts have further made it difficult to evaluate functionality based on alternative designs by stating that the existence of many alternative designs evidences that all of them are functional.

Company A, with its patent and advertising, has probably doomed its trademark protection.  What could it have done differently?

There is probably no way to stop competitors from adopting patented product benefits in copycat products after a company’s patent has expired.  However, a company can maintain consumer recognition.  If it is not cost prohibitive, the company can build in a distinctive feature.  With respect to the wind turbine, it might also place a logo or design on the product’s blades.  Perhaps the company can evidence that a feature of its product is not functional by obtaining a design patent.  Design patents are evidence that a feature is NOT functional.  The company can, and should, create “look for” advertising, to establish that the feature is known by the public as a symbol of source.  The following is an example:

In any event, while it is probably not possible to protect all elements of a utility patented product, companies who think early and often can nevertheless make it easier to distinguish themselves as the first, or the market leader, with some careful thought with respect to the design of the product.  Ask your lawyer for help.

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

July 18, 2017

“Brandverbing Your Trademark.” Is that a good thing?

Filed under: Litigation, Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:43 am

By Janet Marvel

Trademark lawyers get nervous when clients use their trademarks as verbs.  Using a trademark as verb, the lawyers say, might kill the trademark by making it the generic name for a type of product instead of a brand of the product.  But increasingly, modern businesses try to create “brandverbs” (e.g. “Bing and  Decide,” to use a rather ill-fated example).  They praise “brandverbs” as some of the best expressions of brand leadership.  In Elliott v. Google, Inc., 20178 WL 2655528 (9th Cir. June 14, 2017), Google got away with it, arguably because GOOGLE is one of the most famous trademarks in the world.  For many “mere mortal” brand owners, using a trademark as a verb is still risky and companies need to weigh the risk before doing or encouraging it.

In Elliott v. Google, a cybersquatter argued that “googling” to describe the act of looking for information via a search engine made GOOGLE generic, thus forfeiting legally protectable trademark status. The plaintiff contended that “verb use constitutes generic use as a matter of law.”  Interestingly, “the district court assumed on summary judgment that the majority of the public uses the verb “google” to refer to the act of “searching on the internet without regard to [the] search engine used.  In other words, it assumed that a majority of the public uses the verb ‘google’ in a generic and indiscriminate sense.”

However, the Ninth Circuit held that “verb use does not automatically constitute generic use.”  It then held that Elliott’s examples of allegedly generic use of “googling” were not persuasive because they referred to use of “google” as a verb for searching and not to the search engine itself.  Moreover, Google presented overwhelming evidence that GOOGLE was a brand name for a particular search engine, and not a generic term for the general class of search engines.  According to a survey, 93 percent of consumers recognized GOOGLE as a brand.

Trademark lawyers still typically recommend against “brandverbing” because it contributes to a slippery slope leading to a potential finding that a mark is generic.  Trademarks are proper adjectives.  They modify the generic name of a product, e.g. Band-Aid bandages, not Band-Aids, or Kleenex tissues, not Kleenex. The use of a term as a modifier encourages consumers to think that not all bandages are “Band-Aids,” for example.  Similarly, using a trademark as a verb leads consumers to think that, for example, any in-line skate can be used for “rollerblading,” and any photocopying machine can be used “to xerox.”  It is a short step to call all in-line skates “Rollerblades” and all photocopiers “Xeroxes.”

The bottom line is that you can “brandverb” if you think the marketplace rewards outweigh the legal risks, but you should think about the long term consequences, and talk to your lawyers about mitigating risks.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

June 8, 2017

PICK THE RIGHT TRADEMARK AND YOU WON’T HAVE TO SUE PEOPLE

Filed under: Trademark (General) — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:29 am

By Janet Marvel

A case filed recently is an object lesson in the best way to pick a trademark.  The Color Run, LLC sued My School Color Run, LLC for using COLOR RUN for organizing 5K races where people pay to be covered with dyed cornstarch.

If I were the defendant, I would argue that COLOR RUN describes races where participants end up covered in different colors, and the mark, as descriptive, is not legally protected.

If I were the plaintiff, I would argue that COLOR only suggests the nature of the race, i.e., you have to think about it to determine what the race is about, and suggestive marks are legally protected.  I would also argue that I have set up COLOR RUN races for such a long time, they are well-known and my trademark rights are very strong.

If The Color Run tolerates unauthorized use of its mark, it might lose its rights.  That is true of every trademark owner.  But enforcement burdens can be eased by picking a mark in the first place that is easier to protect.  Had The Color Run picked a made-up word for its races, the mark would be easier and less expensive to protect.  On the other hand, no one would have any idea of the nature of the race just by hearing the name.

There is a trick to picking a good mark.  Trademarks are divided into four categories of protection.  The first category includes made-up and arbitrary terms.  Made-up terms, like GOOGLE for web searching services, and arbitrary terms (dictionary words used to designate something other than their standard meaning), like APPLE computers, are easiest to protect.  After all, why would anyone need to use a made-up or arbitrary word to describe what their product is, or what it does?

Made-up and arbitrary marks work well in the tech sector, where people are accustomed to them.  But in some more sober business environments, (say, industrial equipment) these terms might seem over-the-top.

Many marketers prefer the category comprising “descriptive marks.”  Descriptive marks, not surprisingly, describe some characteristics of products.  They can become trademarks if they are used for a long time and become well-known, but they don’t start out as trademarks.  You will have to prove they are distinctive to win your case (there are exceptions, but that’s a post for another day).  Examples of descriptive marks include HOLIDAY INN and BANK OF AMERICA.

Generic terms can never be trademarks.  No pencil manufacturer can stop a competitor from calling its products “pencils.”  “Pencil” is the generic name of the type of thing.

The holy grail for trademark owners may be the “suggestive” mark.  Suggestive marks evoke a characteristic of a product, but they don’t describe it.  They aren’t too weird for markets where consumers want marks that evoke trust (e.g. manufacturing supplies).  They aren’t too boring for the tech market.  Examples include CHICKEN OF THE SEA for tuna, PLAYBOY for men’s magazines, GLASS DOCTOR window repair, and EXTEND YOUR BEAUTY for eyelash extensions.

Unfortunately, the distinction between terms that merely describe a product (descriptive marks) and terms that suggest a product characteristic (suggestive marks) is murky.  A trademark lawyer can help you determine where your mark likely fits.

The bottom line:  If you can pick a mark that is coined or arbitrary, then go for it.  Fewer people will copy it; and if they do, they probably intend to infringe.  That makes your case much easier.  If you can’t pick a coined or arbitrary mark, go for one that is suggestive.  You won’t have to prove that the mark has become distinctive in the marketplace to protect it (although in litigation you may do it anyway, just to be on the safe side).  Suggestive marks are more distinctive than descriptive ones, so there is less justification for copying.  You are likely to face fewer infringers, and you have a better chance of winning disputes.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

June 5, 2013

Flea Market Operator Hit for Over $5 Million for Permitting Sale of Counterfeit Products

Filed under: Counterfeiting, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:41 pm

By Janet Marvel, Partner

The Sixth Circuit, in a case of first impression, held that a flea market operator can be contributorily liable for counterfeiting carried on by vendors renting stalls at his market.  The case illustrates that contributory infringement can be a valuable tool against counterfeiting when the primary infringers are small, numerous, anonymous or (individually) commercially insignificant.

In Coach, Inc. v. Goodfellow, 2013 WL 2364091 (6th Cir. May 31, 2013), the appellate court affirmed a jury award of over $5 million dollars in damages, and a grant of $186,666.61 in attorneys’ fees against Goodfellow, the operator of a flea market at which counterfeit goods were sold.  The district court had granted summary judgment on liability, which Goodfellow failed to contest.  While Goodfellow technically had forfeited his ability to appeal the liability ruling, the court nonetheless used its discretion to render an opinion on liability.

Goodfellow received a letter from Coach in January, 2010, from the district attorney in March, and was served with the complaint in June.  Police raided the market in April, March and June.  In response, Goodfellow distributed pamphlets telling vendors not to counterfeit, and held a voluntary meeting with some vendors, many of whom did not speak English.  He also posted signs saying “counterfeit is prohibit,” but these were meant to address counterfeit currency.  While he claimed to have ejected 16 vendors over a one year period, the court held that “this effort, if believed, is hardly compelling evidence of a reasonable response….”   Goodfellow claimed to believe other counterfeit goods were genuine, but did not check.  He did not train his employees to recognize counterfeits.  Vendors did not sign any agreements that they would not sell counterfeit goods.

The court found that Goodfellow’s remedial measures fell short.  It approved the district court’s conclusion that Goodfellow had engaged in “ostrich-like practices.”  According to the court, Goodfellow “continued to supply flea market resources to vendors with knowledge of and willful blindness toward ongoing infringing activities, thereby facilitating continued infringing activity.”

This supported the court’s finding that Goodfellow was contributorily liable.

Goodfellow equated his anti-counterfeiting efforts with those of eBay, which the court found acceptable in Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010).   There Tiffany sued eBay for contributory liability for sale of counterfeit Tiffany jewelry on the eBay website.  Perhaps the most important distinction between the flea market bricks-and-mortar contributory infringement standard and that imposed on eBay is the speed with which items are listed and the sheer number of them.  The court in Tiffany held that eBay’s general knowledge that counterfeiting was occurring on its site did not create liability.  Specific knowledge (which Goodfellow had, but eBay did not) was required.  It didn’t hurt that eBay spent millions on anti-counterfeiting and had a sophisticated program for dealing with it.

Courts impose contributory liability on those who know about and facilitate counterfeiting, as well as those who would simply “stick their heads in the sand,” refusing to recognize or police it.  Increasingly, liability applies not only to those who sell goods, but also those that offer services.  Manufacturers and licensors suffering from numerous small scale counterfeits would do well to add actions for contributory counterfeiting and trademark infringement to their arsenals.

*     *     *

Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Sixth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

For a printer friendly version, click here.

April 11, 2013

Trademark Board Confirms That New York Yankees Are Evil

Filed under: TM Registration — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:38 pm

By Janet Marvel, Partner

As a life-long Chicago Cubs fan, I am pleased to report that the Trademark Trial and Appeal Board (TTAB) has held that the New York Yankees are known as the “Evil Empire” and therefore, a third party using that term would create confusion as to source or sponsorship.

In New York Yankees Partnership v. Evil Enterprises, Inc., 2013 WL 1305332 (TTAB February 8, 2013) (non-precedential), Evil Enterprises, Inc., the owner of a web site selling Yankees-related products, filed an application for BASEBALLS EVIL EMPIRE.  The Yankees opposed, claiming that the team owned the name, and Evil Enterprises’ mark would confuse the public.  The Yankees also alleged that BASEBALLS EVIL EMPIRE created a false suggestion of connection between the applicant and the Yankees, and that the mark disparaged the Yankees.

The Yankees first had to prove that they owned the mark EVIL EMPIRE, even though they had never used it themselves.  Typically, the first party to use a mark is held to be the owner, but the Board held that the Yankees were entitled to a little-used exception, namely, that “‘even if a company itself has not made use of a term, it may have a ‘protectable property right in the term’ if the public has come to associate the term with the company or its goods or services.'” Other companies have employed this exception.  IBM was held to own BIG BLUE, Coca-Cola owned COKE, and Harley-Davidson owned HOG under this theory.  Note that some companies have now adopted their nicknames and own registrations for them.

The Yankees evidence that it owned EVIL EMPIRE was Legion (pun intended).  The Board had no trouble agreeing that the Yankees owned the mark and that the applicant’s mark both was likely to confuse the public, and likely to create a false association between the Yankees and the applicant.

The Board rejected the Yankees’ argument that EVIL EMPIRE disparaged the team, noting at one point in the opinion that the Yankees used Star Wars music (presumably the Darth Vader theme) during games.  In a particularly cogent comment, the Board stated “[H]aving succumbed to the lure of the dark side, opposer will not now be heard to complain about the judgment of those who prefer the comfort of the light.”

The takeaways from this case are (1) the Yankees are evil and the Cubs, by implication, are loveable, and (2) that if a company is known by a famous nickname, it may be able to claim ownership in it, even if it has not itself used the nickname in commerce.  If a company finds itself yoked with a nickname, it should consider adopting and using the name, thereby making misuses of the name easier to curtail.

*     *     *

Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Sixth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

For a printer-friendly version, click here.

September 10, 2012

When Does the First Amendment Trump Trademark Law? 11th Circuit Adopts Rogers v. Grimaldi Test

Filed under: Constitution, First Amendment, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:08 pm

By Janet Marvel, Partner

In 1989, the Second Circuit adopted a balancing test to weigh the value of an artist’s First Amendment rights against the value of trademarks depicted in the artist’s work.  Rogers v. Grimaldi, 875 F.2d 994 (9th Cir. 1989).  In June of this year, the 11th Circuit adopted essentially the same test in University of Alabama Board of Trustees v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. June 11, 2012).

Some Background

In Rogers v. Grimaldi, 875 F.2d 994 (9th Cir. 1989), Ginger Rogers sued over an Italian film titled “Ginger and Fred,” which was about two cabaret performers who imitated Ginger Rogers and Fred Astaire.  Ms. Rogers alleged violations of her rights under the federal trademark statute (the Lanham Act) and of her right of publicity under state law.  The district court dismissed the claim and the Second Circuit affirmed.  The court stated that enjoining the distribution of artistic works does not violate the First Amendment where the public interest in avoiding consumer confusion outweighs the public interest in free expression.  For movie titles, the court stated that unless the title had no artistic relevance to the underlying work or was expressly misleading, no injunction should issue.  Other courts have adopted similar tests, including the Sixth Circuit, in ETW v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003), where the court permitted defendant’s use of Tiger Woods’ name on the inside flap of an envelope containing an art print featuring his image, and in the narrative description for the print.  See also ESS Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (scene in a video game featuring trademark of plaintiff’s entertainment club did not infringe plaintiff’s trademark rights).

The Crimson and White

In University of Alabama Board of Trustees v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. June 11, 2012), the University sued an artist who, for over thirty years, had painted and sold images of plays in University of Alabama football games.  The parties had entered into various licensing agreements, apparently licensing some University of Alabama logos, among other things.  In 2002, the University demanded that the artist take a license for all of his works because they depicted University uniforms in the colors crimson and white, which the University stated were its trademarks.  The artist declined, arguing that he did not need a license to depict University trademarks within his images.

The court separately considered the parties’ respective rights in calendars, and large-size paintings and prints, and “mundane products,” comprising such things as “‘mini-prints,” mugs, cups, flags, and towels. (more…)

July 12, 2012

Seventh Circuit Issues Important Decision Regarding Trademarks in Bankruptcy

Filed under: Licensing, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:46 am

By Janet Marvel, Trademark Attorney

When a trademark licensor declares bankruptcy, the trustee may reject the trademark license.   The trademark licensee then can lose its rights to use the licensed trademark, which obviously can be a disaster for the licensee.  The Bankruptcy Code protects patent and copyright licensees from this fate, but not trademark licensees.  See 11 U.S.C. § 365(n).

On Monday, the Seventh Circuit created a circuit split and issued a very encouraging decision for trademark licensees.  In Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC., 2012 WL 2687939 (7th Cir. July 9, 2012), the Seventh Circuit held that a trademark licensee retained its rights to use a licensed trademark even after the bankruptcy trustee for the licensor rejected the license agreement.

Some background is necessary.  In 1985, the Fourth Circuit decided Lubrizol Enterprises, Inc. v. Richmond Metal Finishers, Inc., 756 F.2d 1043 (4th Cir. 1985).  There, the court held that an intellectual property licensee loses its rights to use licensed property if the license is rejected in bankruptcy.  Three years later, Congress amended the Bankruptcy Code to permit “intellectual property” licensees to continue to use licensed property after rejection, subject to certain conditions. 11 U.S.C. § 365(n).  The Bankruptcy Code’s definition of “intellectual property” includes patents, copyrights, and trade secrets, but not trademarks.

Many courts interpreted the omission of trademarks from the definition of “intellectual property” to mean that the Lubrizol holding continued to apply to trademark licensees, and they would not retain any license rights upon rejection.  This interpretation has been assailed, but never as aggressively as by the Sunbeam Products decision.  See In re Exide Technologies, 607 F.3d 957 (3d Cir. 2010), cert. denied, 131 S.Ct. 1470 (2011) (Ambro J., concurring).

Chief Judge Easterbrook, writing for the court in Sunbeam Products, found that Lubrizol “was mistaken”.  In the Sunbeam Products case, the debtor-licensor made box fans, among other things.  It contracted with Chicago American Manufacturing (“CAM”) to manufacture the fans, and granted a patent and trademark license to CAM.  The agreement permitted CAM to itself sell box fans it made for the debtor if the debtor could not afford to buy the fans for resale.  When the debtor went bankrupt, Sunbeam bought its trademarks.  Sunbeam wanted to make fans under the licensed mark without competition from CAM.  The trustee rejected CAM’s license agreement, and Sunbeam sued CAM for infringement.

The district court held for CAM, permitting CAM “on equitable grounds” to continue to use the licensed mark.  The Seventh Circuit rejected “equitable grounds” as the rationale for the decision, but affirmed it anyway.  The court held that the omission of trademarks from section 365(n) was not a codification of Lubrizol.  Instead, the court stated that “an omission is just an omission.”  The court then noted that a rejection under the Bankruptcy Code was a breach of contract, in this case by the licensor, “but nothing about this process implies that any rights of the other contracting party have been vaporized.”  Id. at *3.  The rejection ”merely frees the estate from the obligation to perform and has absolutely no effect upon the contract’s continued existence.” Id. at *4 (citations and internal quotations omitted). As such, rejection, even if effected, did not terminate the licensee’s rights.

After Sunbeam Products, trademark licensees in the Seventh Circuit now share “the same rights” under the Bankruptcy Code as other intellectual property licensees.  Whether Sunbeam will appeal to the Supreme Court, and then, whether the Court will grant certiorari, remains to be seen.

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Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

For a printer-friendly version, click here.

June 15, 2012

Recent Cases Show That Utilitarian Functionality Is A Serious – And Common – Impediment To Trade Dress Protection

Filed under: Litigation, Trade Dress — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:14 pm

By Janet Marvel, Trademark Attorney

A product shape or package must be non-functional to qualify for trade dress protection.  Yet a spate of recent cases reveals many plaintiffs who try to expand or lengthen patent protection by alleging that their product features designate source.  Below is a description of recent trade dress protection attempts along with a short refresher on the reasons for the functionality doctrine and how to deal with it.

A mark is functional if it is “essential to the use or purpose of an article or affects the cost or quality of an article.”  TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001).  If a mark fits this test, it is functional, and not protectable.  If it does not, courts may still consider whether there is a competitive necessity to use the product feature.  In other words, courts may consider whether alternative product designs are available, and whether the cost or time involved in using an alternative design makes it impractical.  Id. at 33. See also, In re Becton, Dickinson and Co., 675 F.3d 1368, 1376 (Fed. Cir. 2012).

The functionality bar to trade dress protection exists to prohibit would-be trademark owners from protecting functional features in perpetuity, rather than for the limited time permitted by patent law.  For this reason, the existence of a patent covering a feature claimed to constitute trade dress is the kiss of death for trademark protection.

Four factors have developed to help determine whether an alleged mark is functional.  They vary by circuit, but the Federal Circuit’s list is instructive.  The Federal Circuit and the United States Patent and Trademark Office consider the following in determining functionality:

(1)       the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;

(2)       advertising by the applicant that touts the utilitarian advantages of the design;

(3)       facts pertaining to the availability of alternative designs, and

(4)       facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982).  See also, Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 1275, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002).

Most recent trade dress claims have foundered on these factors.  In particular, plaintiffs and trademark applicants have tried to argue around the existence of prior patents – to no avail.  See Seirus Innovative Accessories, Inc. v. Gordini U.S.A., Inc., 2012 WL 368044 (S.D. Cal. Feb. 3, 2012) (court found patent invalid but held that patent nonetheless supported finding of functionality); Great Neck Saw Manufacturers, Inc. v. Star Asia U.S.A., LLC, 727 F. Supp. 2d 1038 (W.D. Wash. 2010), aff’d 432 Fed. Appx. 963 (Fed. Cir. 2011) (utility knife shape found functional based, in part, on prior utility patent); In re Charles N. Van Valkenburgh, 97 USPQ2d 1757 (TTAB 2011) (refusing registration of shape of motorcycle stand: “[W]e look to the features disclosed in the patent which have been incorporated into the present product designs and the teachings of the patent with respect to these features”).

It is irrelevant whether a patent is expired or current.  See Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723 (7th Cir. 2011) (factors for evaluating functionality include the “existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item’s design element”).  Third party patents can block trademark protection.  Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010) (third party utility patents are “excellent cheat sheets” for determining functionality).  While parties have argued that only patent claims should bar trademark protection, courts have not been so constrained.  See In re Becton, Dickinson and Co., 675 F.3d 1368 (Fed. Cir. 2012) (rejecting applicant’s arguments that only patent claims can evidence functionality).  A patent application, even if rejected or abandoned, is evidence of functionality.  Ogosport LLC. v. Maranda Enterprises LLC, 2012 WL 683111 (E.D. Wis. March 2, 2012) (citing plaintiff’s abandoned patent applications but relying on third party patents to support functionality holding); Seirus Innovative Accessories, Inc., 2012 WL 368044 (same).

Similarly, a party’s own advertising is often construed as an admission of functionality.  See Secalt S.A. v. Wuxi Shenxi Construction Machinery Co., Ltd., 668 F.3d 677 (9th Cir. 2012) (plaintiff’s advertisements regarding alleged trade dress in square shape of scaffold hoist stated that the product was square so it would not roll off tables; alleged trade dress found functional); Talking Rain Beverage Co., Inc. v. South Beach Beverage Co., 349 F.3d 601, 604 (9th Cir. 2003) (plaintiff’s advertising encouraging consumers to “Get a Grip.” on water bottle found to weigh in favor of functionality); Poly-Am., L.P. v. Stego Indus., L.L.C., No. 3:08-CV-2224-G, 2011 WL 3206687, at *7 (N.D. Tex. July 27, 2011) (advertising utilitarian benefits of yellow trade dress for vapor barrier nullifies the presumption of validity bestowed on the alleged mark by registration); Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d 1912 (TTAB 2011) (bridge culvert shape advertised as superior for shedding water held functional).

Moreover, while many plaintiffs have tried to argue that there are other ways to make products competitive to theirs, courts have rejected this “alternative designs test.”  See Specialized Seating, Inc. v. Greenwich Industries, L.P., 616 F.3d 722 (7th Cir. 2010) (existence of many alternative designs for folding chair did not mean that the plaintiff’s design was non-functional.  It was not “the only way to do things” but “it represent[ed] one of many solutions to a problem.”)

Many of the recent functionality cases arise from facts that seem to show that plaintiffs have tried to continue protection beyond a patent period.  It is understandable that a party with a successful and unique product would view post-patent copyists as interlopers.  The better way to differentiate against such competitors upon expiration of a patent may be to consider trade dress protection at the time that a patentable product is developed.  If a source-differentiating feature can be added to the product upon its introduction, that feature will have time to develop secondary meaning during the patent period.  When the patent expires, the source identifier will serve to identify its associated product as the original, and likely the market leader.

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Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

For a printer-friendly version, click here.

April 16, 2012

The Mud Thickens: The Federal Circuit Issues Its Latest Decision on Utilitarian Functionality, Refusing Registration to Becton Dickinson’s Blood Collection Tube Cap

Filed under: TM Registration — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:09 am

By Janet Marvel, Trademark Attorney

On April 12, 2012, the Federal Circuit waded into the increasingly muddy waters of utilitarian functionality law with its decision in In re Becton, Dickinson and Co., 2012 WL 1216281.  The Federal Circuit affirmed the TTAB’s decision that Becton Dickinson’s (“BD”) closure cap for blood collection tubes (shown below) was functional and not registerable by the U.S. Patent and Trademark Office.  The drawing for BD’s mark appeared as follows:

A shape is functional as utilitarian if it is “essential to the use or purpose of the article or affects the cost or quality of the article.”  TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001).  Functional shapes can never be protected as trademarks.  Over the past year or two, the courts have produced a number of utilitarian functionality decisions that unfortunately do little to help businesses predict whether their designs are functional or subject to trademark protection.  See, e.g., Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corporation, 647 F.2d 723 (7th Cir. 2011) (quilted toilet paper design found functional); Specialized Seating v. Greenwich Industries, L.P., 616 F.3d 722 (7th Cir. 2010) (folding chair found functional as utilitarian despite hundreds of alternative designs); Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010) (round beach towel found functional on utilitarian and aesthetic grounds).  In re Becton Dickinson continues to grapple with the determination.

The Federal Circuit uses four factors to evaluate utilitarian functionality: (1) the existence of a utility patent disclosing the utilitarian advantages of the design sought to be registered; (2) advertising by the applicant that touts the utilitarian advantages of the design; (3) whether the design results from a comparatively simple or inexpensive method of manufacture, and (4) the availability of alternative designs.  In re Morton-Norwich Prods., Inc., 671 F.2d 1331 (C.C.P.A. 1982).

Before turning to the factors, the court evaluated BD’s main argument.  The drawing in BD’s application included both functional and non-functional elements.  BD argued that the existence of some non-functional features removed the mark “from the realm of functionality.”  The Board disagreed, noting that “a mark possessed of significant functional features should not qualify for trademark protection where insignificant elements of the design are non-functional.”  Id.  Far from finding that the TTAB’s weighing of the functional and non-functional features of the claimed design was improper, as BD claimed, the Federal Circuit stated that the inquiry was “mandated.” (more…)

March 16, 2012

Bare Trademark Rights? Naked Cowboy’s Infringement Action Against CBS Dismissed

Filed under: Litigation, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:11 pm

By Janet Marvel, Trademark Attorney

Robert John Burck has made a career as a New York street performer.  He is (arguably) famous under his alias, “The Naked Cowboy”, appearing with his guitar in Times Square, clad only in a hat, boots and briefs.  In Naked Cowboy v. CBS, 101 USPQ2d 1841 (S.D.N.Y. Feb. 22, 2012), Burck sued CBS for what he believed was a  take-off of his Naked Cowboy character in the CBS television soap opera “The Bold and the Beautiful,” a segment of which CBS later posted on You Tube.  In the soap opera episode, a character appears clad similarly to the Naked Cowboy, namely, with guitar, boots, hat and briefs only.  Burck alleged trademark infringement, state and federal unfair competition, fraud, and violation of New York’s right of privacy statute, New York Civil Rights Law §§ 50, 51.  The court dismissed the complaint, holding that while Burck owned trademark rights in “Naked Cowboy,” CBS had not used “Naked Cowboy” in commerce

CBS titled its You Tube clip “The Bold and the Beautiful – Naked Cowboy” and  purchased the You Tube adword “naked cowboy.”  The court held that purchase of adwords was not trademark use because Defendants did not use the term “naked cowboy” in a way that denotes source or sponsorship.  The holding with respect to adword use seems directly contrary to the holding in Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009), which held that Google’s sale of adwords constituted use in commerce.  Indeed, for support, the Naked Cowboy court cited Merck v. Mediplan Health Consulting, Inc., 425 F. Supp. 2d 402, 415 (SDNY 2006), the holding of which Rescuecom cast into doubt.

The court also held that CBS’s use of “Naked Cowboy” in the title of its You Tube clip was not intended (at least on the facts plaintiff pled) to trade on the plaintiff’s goodwill, and therefore that it was “fair use.”  Fair use typically requires a showing that the mark is used nominatively, descriptively, or comparatively.  Reading between the lines, the court must have considered that any performer with boots, briefs and a guitar was an (almost) “naked cowboy,” hence the use was descriptive.

Nor did the court find that the soap opera actor’s costume infringed that of the Naked Cowboy, because Burck plasters “Naked Cowboy” and “Tips” across his articles of clothing, while the actor did not.

Finally, the court rejected the Naked Cowboy’s claim that CBS violated New York’s right of privacy statute, which forbids the “use [] for advertising purposes or for purposes of trade,  the name, portrait or picture of any living person, without prior consent.”  N.Y. Civ. Rights § 50.  The court rejected this argument, citing the Burck’s previous loss in Burck v. Mars, a case in which the Naked Cowboy alleged that a talking M&M candy violated his right of privacy:  “[T]he right of privacy  does not extend to fictitious characters adopted or created by celebrities[,] and it does not protect ‘a trademarked costumed character publicly performed by a person.'”

The case, while probably not doctrinally correct should give hope to naked cowboys everywhere.

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Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

For a printer-friendly version, click here.

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